First Reading for AU Designs Amendment Bill
Following on from the consultation late last year the Australian Government has now introduced and given the first reading of the Designs Amendment (Advisory Council on Intellectual Property Response) Bill 2020.
Last year’s consultation outlined options in respect of the various provisions that were considered available for amendment - a summary of the more substantive options is given here. The Bill will make the following changes:
Replacing the current restricted 6-month grace period with a general 12-month grace period for relevant disclosures by the applicant or their predecessor or the creator of the design and for such disclosures by another entity who derived or obtained the disclosed design from those first mentioned entities. Where an identical or substantially similar design has been prior published or used by another entity and the first mentioned entities claim that the disclosed design was derived or obtained from them, then the onus will be on the other entity to show that they created the design without reference to or knowledge of a design of the first mentioned entities. The Bill also introduces a prior use exemption from infringement where another entity has prior used or taken definite steps towards using an otherwise infringing design and who did not derive or obtain the design from the first mentioned entities.
The Bill allows publication to be deferred for up to 6-months. If the applicant does not select the registration option when filing, then the request for registration will be deferred for 6-months, but the applicant can shorten that by requesting registration during that period. Unless the applicant withdraws the application publication will occur once the design passes the formalities examination. The Bill will also remove the current option of choosing publication without registration.
Relief from Infringement Before Registration
The Bill will extend the innocent infringer relief so that it is available for infringement between filing and registration, given that under the Designs Act the infringement provisions apply from the filing date. To be eligible for relief, an infringer has the onus of showing they did not know and could not reasonably be expected to know of the application disclosing the infringed design. The ability to qualify for this relief will end once the otherwise infringed design is registered or when the applicant notifies the innocent infringer.
Right of Exclusive Licensees to Bring Infringement Proceedings
The Bill will allow exclusive licensees of a registered design to commence infringement actions against third parties in respect of infringing conduct subsequent to the commencement of the amendments. It is also clarified that the exclusive licensee cannot bring infringement proceedings against a party that they have authorised or licenced to use the design. Given that the exclusive licensee is the only party entitled to exploit the design in Australia and that the registered owner is not always motivated to enforce that right, this change is considered overdue and will bring the Designs Act in line with other IP legislation. In order to put the registered owner on notice that a proceedings has been commenced the exclusive licensee is required to join the registered owner as a defendant unless they are joined as a plaintiff. When joined as a defendant the exclusive licensee is not subject to any awarded costs unless they have taken part in the proceedings.
The Bill will repeal Schedule 2 of the Designs Regulations 2004, which sets out the form that documents must take to be accepted for filing or publication, and instead amend the Act so as to provide that the Commissioner of Designs can issue non-legislative instruments to determine formality requirements. This more flexible approach reflects an equivalent change that was made in respect of the Patents legislation.
Standard of the Informed User
The Bill will amend the Act by clarifying that when designs are compared through the eyes of a notional person, that person only has to be familiar with the product, or products similar to that product, and it does not matter how that familiarity is acquired. This will be done by replacing the standard of the informed user with the standard of the familiar person. As such, the category of the familiar person is wider than the informed user under the European approach, who needs to be a user of the product. The change will only apply to designs filed after the commencement of the amendments.
Revocation of Registration
The Bill will clarify aspects of the revocation grounds. Currently one of the ways a registered design can be revoked is on account of the registration being obtained by fraud or false suggestion. The Bill clarifies that the use of fraud or false suggestion at other stages, such as when certifying a design, is also a basis for revocation. The Bill also clarifies that when revocation is sought on the basis of lack of entitlement that the Court has the discretion to not revoke the design if it is just and equitable to do so, such as where the Court may instead substitute another person as the owner. These changes will apply to applications for revocation made on or after the commencement of the amendments.
Renewal of Registration
Currently it is not clear what the status is of a design during the 6-month renewal grace period and in particular whether it has ceased for infringement purposes. The Bill clarifies that the design is still active for infringement purposes provided it is renewed before the end of the renewal grace period, but that if it is not so renewed it ceases from the renewal due date. Consequently, third parties should assume the design remains active until the end of the renewal grace period.
What Doesn't Change?
Notably, the Bill does not introduce partial designs or allow virtual designs to be certified. However, given that key countries and regions that Australia trades with recognise these in one form or another, it can be assumed that they remain in contention for recognition in the future.
Author: Quinn Miller